Nearly 3000 European patents were opposed in 2006 according to the latest information from the European Patent Office, reflecting the commercial significance of European patents.  We have a significant opposition and appeal practice.  The EPO has recently announced some changes to opposition and appeal practice.

Acceleration of European Patent Office appeal and opposition proceedings

EPO opposition and appeal cases often take several years to come to a decision.  This has been the subject of criticism by users of the system and also by some national courts.  The Patents Court in the United Kingdom will often not suspend infringement/revocation proceedings in relation to European (GB) patents where there are simultaneous opposition or appeal proceedings in the EPO.  This is because the UK Courts can usually come to a final decision on validity far quicker than the EPO.

The EPO has recently announced changes which could significantly speed up some opposition and appeal cases.  Opposition and appeal proceedings can now be accelerated in cases where an infringement action in respect of the European patent is pending before a national court of a contracting state.  Any of the parties to the opposition proceedings may request accelerated processing.  The EPO will then try to issue the next procedural action (e.g. communication, summons to oral proceedings) within three months of receipt of the request.  If a request for acceleration is filed within the nine month opposition period the next procedural action should occur within three months of receipt of the patent proprietor's response to the notice of opposition.
Alternatively, the EPO will also accelerate the processing of the opposition if it is informed by a national court or competent authority of a contracting state that infringement actions are pending.

Parties to the opposition proceedings are then expected to make full submissions promptly and to adhere to the time limits set by the EPO for replying to communications or commenting on written submissions from the other parties. Requests to extend time limits over and above the normal four-month period will only be granted in exceptional, duly substantiated cases.

In a parallel move, parties with a legitimate interest may also ask the EPO Boards of Appeal to deal with their appeals rapidly within certain limitations.  It has been announced that a decision to allow acceleration will depend on the nature of the case and not merely on whether accelerated processing is requested by the parties.

A justified request for accelerated processing of an appeal must be submitted to the Board at any time during proceedings. The courts and patent offices of the contracting states can also submit a request for acceleration.

The EPO has indicated that the following circumstances could justify an appeal being dealt with particularly rapidly:

– where infringement proceedings have been brought or are envisaged

– where the decision of potential licensees of the European patent, which is the subject of an appeal, hinges upon the outcome of the appeal proceedings.  This is a very interesting development and could be of significant commercial interest to clients negotiating licence deals.

– where an opposition which is to be given accelerated processing as discussed above has been made the subject of an appeal.

The filing of an appeal in the EPO suspends the effect of the decision being appealed.  Exceptionally a Board of Appeal may itself accelerate an appeal procedure ex officio, for example in view of the disadvantages which could ensue from the suspensive effect of the appeal in the case in question.

Appeal cases which are accelerated will get priority with the Board of Appeal adopting a strict framework for the procedure, for example concerning the time limits available before the final decision.

Searchable online calendar for oral proceedings in opposition and appeal cases

The European Patent Office has also recently introduced a searchable online calendar giving details of oral proceedings in opposition and appeal proceedings.  The calendar can be found at:

http://www.epo.org/patents/Grant-procedure/proceedings/calendar.html

The calendar can be searched by "proprietor" and "opponent" and other terms.  This will be of value to clients wishing to monitor the progress of European oppositions and appeals.

Oral proceedings in opposition and appeal proceedings are conducted in public.  It is relatively common that interested parties send observers to report on the outcome of oral proceedings.  In contrast, oral proceedings before an Examination Division are not public.

For more information on any of these changes please contact your usual Withers & Rogers European patent attorney.

John Dean
Life Sciences & Chemistry Group

May 2008